February 15, 2014

IPCom who Sued Apple for $2.2 Billion Germany this Week, Seeks to Obtain Documents from Apple in California Subpoena

It was reported this week that patent holding company IPCom, based in Munich, has sued mobile-device makers globally over mobile technology it acquired from Robert Bosch GmbH in 2007 to collect license fees. The company is now specifically suing Apple for 1.57 Billion Euro (US $2.2 Billion). FOSS Patents interestingly noted that Samsung and Google lawyers are to represent the licensing firm against Apple. Bloomberg's report noted that "Apple's lawyer Wolrad Prinz zu Waldeck und Pyrmont argued the language of the patent is restricted to one bit while the 3G standard uses three bits. The court shouldn't allow an interpretation that goes beyond the actual language the patent was granted for." Patently Apple has now learnt that IPCom has filed an ex parte for an order in California allowing them to obtain targeted discovery from Apple to be used in their case in Germany. Our report provides you with an overview of IPCom's filing.

Introduction

IPCom seeks from Apple copies of all license agreements Apple has concluded with third parties regarding patents that are declared essential to cellular standards UMTS and/or GSM, GPRS, and EDGE. The documents are directly relevant to disputed issues in the foreign proceedings and are in the possession of Apple in the United States. The statute in question specifically authorizes the production of documents such as those sought by IPCom. Accordingly, IPCom seeks the issuance of a subpoena.

Background

The following are excerpts from IPCom's ex parte application: "Apple sells wireless devices such as the iPhone and iPad that IPCom asserts infringe IPCom patents, including patents declared essential to wireless communication standards. With this filing, IPCom seeks documents from Apple for use in foreign proceedings. Under 28 U.S.C. § 1782, parties such as IPCom may obtain discovery for use in foreign litigations from companies located within the United States.

A disputed issue in the (2 0 53/12 and 2 0 95/13) actions in Germany concerns Apple's licenses for wireless communications technologies. In the pending German litigation, Apple claimed that it has allegedly concluded license agreements covering a number of patents that are declared essential to UMTS and GSM, GPRS, and EDGE. Such license agreements are directly relevant to the damages calculation in that action. Apple has not produced any of these license agreements to the German court. IPCom desires through the present application to obtain from Apple these license agreements.

IPCom's application satisfies Section 1782's three statutory requirements. First, it is in "the district in which [the] person resides," 28 U.S.C. § 1782(a), because Apple's global headquarters is in Cupertino, California. Second, IPCom seeks the discovery "for use in a proceeding in a foreign . . . tribunal," id., including in at least the District Court of Mannheim, Germany. Third, IPCom qualifies as an "interested person" in those foreign proceedings because it is a party in those cases.

In addition to Section 1782's statutory requirements, the Supreme Court has set forth several non-exclusive factors to assist district courts in the exercise of their discretion in granting Section 1782 applications. Each of these factors provides further support for IPCom's request. German courts are receptive to the type of discovery sought by IPCom, the discovery sought provides key information for the foreign proceedings, and the request is not made to circumvent any limitation on discovery imposed by German courts. In addition, the discovery request is narrowly tailored and is not unduly intrusive or burdensome."

The request before the court then lists their arguments as to why the court should grant the issuance of a subpoena. One specific point notes that "Specifically, IPCom seeks the information relating to Apple's claim in the action brought by IPCom in the Mannheim District Court that Apple has allegedly concluded license agreements covering more than 75% of all patents that are declared essential to UMTS and GSM, GPRS, and EDGE."

IPCom further noted that the "discovery is narrowly tailored to avoid undue burden. IPCom is requesting discovery of a small, discrete set of documents: intellectual property licenses between Apple and third parties relating to wireless communications technology."

The EX PARTE Application was filed with the California Northern District Court in San Jose late yesterday by IPCom attorneys. The Presiding Judge is noted as being Judge Edward J. Davila and the referring Judge as Paul Singh Grewal.

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